The court found a judge had erred in ordering revocation of a Specsavers trademark where evidence that use of the wordless logo together with the registered word trademark superimposed over the top had served to identify the goods and services.
Specsavers International Healthcare Ltd and others v Asda Stores Ltd (Registrar of Trade Marks intervening): Court of Appeal, Civil Division
Specsavers having registered community trademark comprising two overlapping ovals – Specsavers also having registered trademark in word ‘Specsavers’ – Specsavers commonly using wordless mark and word mark together
Specsavers, a well-known high street optician, had a registered Community trademark in the form of a wordless logo comprising two overlapping ovals (for the wordless logo see  of the judgment). The wordless logo was registered without any colour limitation but, in the proceedings, Specsavers relied upon the enhanced reputation that it enjoyed in the colour dark green.
Specsavers also had a registered Community mark in respect of the word ‘Specsavers’. It used a combination of the wordless logo superimposed with the word mark (together the ‘shaded logo’) (for the shaded logo see  of the judgment). It commenced proceedings against Asda alleging that its marketing campaign, which used abutting ovals using the colours white and light green in respect of its own optical services, infringed the wordless logo under articles 9(1)(b) and (c) of Council Regulation (EC) 207/2009 (on the Community trademark).
Asda, in reliance on articless 15 and 51 of the Regulation, sought revocation of the wordless mark on the ground of non-use. The judge declared that certain aspects of the marketing campaign did not infringe Specsavers’ registered trademarks and he revoked the wordless logo. Specsavers appealed against those declarations and Asda cross-appealed against the one finding of infringement that the judge had found under article 9(1)(c) of the Regulation.
Before the Court of Appeal, Specsavers contended that the judge had fallen into error because there had been ample evidence before him that the overlapping ovals in the shaded logo had an independent distinctive role and that use of that logo mark had, therefore, constituted use of the wordless logo too.
The court gave judgment on various aspects of Specsavers’ appeal ( EWCA Civ 24) but, in respect of the order for revocation of the wordless logo and the finding of non-infringement of that logo, the court made a reference to the Court of Justice of the European Union concerning the interpretation of articles 9(1)(b) and (c) and articles 15 and 51 of the Regulation (for the questions referred see  and  of the judgment).
The CJEU gave its judgment ( All ER (D) 355 (Jul)) and concluded that: ‘article 15(1) and article 51(1)(a) of [the Regulation] must be interpreted as meaning that the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trademark, to the extent that the differences between the form in which that trademark is used and that in which it was registered do not change the distinctive character of that trademark as registered’.
It further held that: ‘article 9(1)(b) and (c) of [the Regulation] must be interpreted as meaning that where a Community trademark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trademark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision’.
Furthermore, it considered that it would potentially be relevant to the global appreciation analysis that a defendant was itself associated with the colour of the accused marks, and that that might reduce the likelihood of confusion or association. The parties settled the dispute but agreed that Specsavers were at liberty to pursue their appeal against the revocation order and the matter returned to court.
The appeal would be allowed.
The national court was required to consider the use which had been made and to ask itself whether the differences between the form in which the mark had been used and that in which it was registered did not change the distinctive character of the mark as registered. In carrying out that exercise the court might ask whether the use relied upon was such that the trademark as registered served to identify the goods or services as those of a particular undertaking.
Put another way, if the mark as registered was used only as part of a composite mark, the use had to be such that the mark as registered was itself perceived as indicative of the origin of the goods or services. Moreover, it was permissible to take into consideration that the mark had always been used in a particular colour in so far as that affected how the mark was perceived by the average consumer (see  of the judgment).
In the unusual circumstances of the present case, Specsavers had established that much of the use they had made of the shaded logo including, in particular, its use on signage, did also constitute use of the wordless logo, for the evidence showed that it had been such that the wordless logo had served and did serve to identify the goods and services of Specsavers, and that the average consumer had perceived and did perceive the wordless logo as indicative of the origin of the goods and services supplied by Specsavers.
First, there was no doubt that Specsavers had made very substantial use of the shaded logo over many years. Secondly, it was a particular feature of the business that none of Specsavers’ major competitors had a logo which was remotely similar to the shaded logo or the wordless logo. Thirdly, there was evidence, based on Asda’s own internal communications, that the wordless logo denoted Specsavers and that Asda had had a good understanding of the average consumer’s perception of the shaded logo.
Fourthly, the evidence was that the average consumer recognised the green overlapping ellipses on signage outside Specsavers’ outlets as denoting Specsavers and that the word ‘Specsavers’ did not stand out (see , , -, ,  of the judgment).
Decision of Mann J  EWHC 2035 (Ch) reversed in part.
James Mellor QC (instructed by HGF Law LLP, Leeds) for Specsavers; Charlotte May QC (instructed by the Treasury Solicitor) for the Registrar of Trade Marks as intervener.